Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 23/10/2016

MARKS & CLERK LLP

1 New York Street

Manchester M1 4HD

REINO UNIDO

Application No:	014882823
Your reference:	MMS/LY/TM342559EMA
Trade mark:	GREEN FINISH
Mark type:	Word mark
Applicant:	Japan Tobacco Inc. 2-2-1 Toranomon Minato-ku Tokyo JAPÓN

The Office raised an objection on 18/12/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 17/02/2016, which may be summarised as follows:

The goods in question are not typically green, thus there is no link between the sign applied for and the goods in the mind of the public. There is no aspect of the goods in question where the sign applied for might be reasonably used to describe such goods.

The mark must be considered as a whole. In connection with the word “finish” the term “green” will not be considered as describing the colour of the goods in question.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially. (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

For the case at hand the above means that it is irrelevant, whether the colour is a main characteristic of a pipe, an electronic cigarette or other smoker articles, as long as it is a possible characteristic.

As already laid out in the objection letter of 18/12/2015 the colour and the texture (surface finish) especially of pipes but also of other smoker’s articles, are one of the characteristics determining the purchase decision. The Applicant’s submission does not contain any arguments that could convince the Office of the contrary, especially did the applicant not provide any idea as to how the relevant public should understand the sign in question if not as an indication of the (green) coloured appearance of the goods.

The Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

The same reasoning can be applied in analogy to the Office’s Examiners.

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as descriptive and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it would have been up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 882 823 is hereby rejected for the following goods:

Class 34 Electronic cigarettes, smoker’s articles included in class 34.

The application may proceed for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Volker Timo MENSING